Technology Transfer and License Agreement - Sepracor Inc. and Seprachem Inc.
TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
THIS TECHNOLOGY TRANSFER AND LICENSE AGREEMENT is effective as of January
1, 1995 by and between SEPRACOR, INC. ("SI"), a Delaware corporation which has
offices at 33 Locke Drive, Marlborough, Massachusetts and SEPRACHEM INC.
("SCI"), a Delaware corporation which has offices at 33 Locke Drive,
Marlborough, Massachusetts.
WHEREAS, SI possesses certain intellectual and industrial property rights;
and
WHEREAS, SI is willing to grant, and SCI desires to acquire, exclusive
rights to use such rights on a worldwide basis in accordance with the terms and
conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and mutual promises, terms
and conditions hereinafter set forth, and other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the parties do
hereby agree as follows:
1. DEFINITIONS
As used herein, the following terms shall have the following definitions.
1.1 Combinatorial Chemistry Libraries. "Combinatorial Chemistry Libraries"
shall mean any group of 25 or more compounds related in structure and
synthesized contemporaneously from a common intermediate in quantities of no
more than one hundred grams per compound.
1.2 Confidential Information. "Confidential Information" shall mean: (a)
all non-public Licensed Technology of SI either disclosed to SCI or otherwise
acquired by SCI pursuant to this Agreement; or (b) Improvements discovered,
developed or acquired by SCI and disclosed to SI.
1.3 Effective Date. "Effective Date" shall mean January 1, 1995.
1.4 Force Majeure. "Force Majeure" shall mean any act of God, any accident,
explosion, fire, storm, earthquake, flood, drought, peril of the sea, riot,
embargo, war or foreign, federal, state, provincial or municipal order of
general application, seizure, requisition or allocation, any failure or delay of
transportation, shortage of or inability to obtain supplies, equipment, fuel or
labor, or any other circumstances or event beyond the reasonable control of the
party relying upon such circumstance or event.
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1.5 Improvement. "Improvement" shall mean any improvement or enhancement to
the Licensed Technology that is discovered, developed or otherwise acquired by
SI or SCI prior to the termination or expiration of this Agreement, whether
patentable or not; provided, however, that if an Improvement has been acquired
from a third party, such Improvement shall be included in this definition only
to the extent that such third party has granted rights to sublicense or
otherwise extend the right to use such Improvement. Improvements shall not
include rights to compounds made using the Licensed Technology unless such
compounds are useful in practicing the Licensed Technology.
1.6 Licensed Technology. "Licensed Technology" shall mean public and
non-public technical or other information, trade secrets, know-how, processes,
formulations, concepts, ideas, preclinical, clinical, pharmacological or other
data and testing results, experimental methods or results, descriptions,
business or scientific plans, depictions, customer lists and any other written,
printed or electronically stored materials, and any and all other intellectual
property, including patents or patent applications owned or controlled by SI as
of the Effective Date (including, but not limited to, the Patent Rights, the
Technical Information and other rights (i) created by agreements between SI and
third parties which are listed and described in Exhibit A attached hereto and
incorporated herein by reference and (ii) for which a co-equal ownership right
and interest is assigned to SCI pursuant to Section 4.3 below), that relates to
and is used in researching, developing or manufacturing Products. "Owned or
controlled" shall include only rights which SI owns, or under which SI is
licensed and has the right to extend the right to use to SCI.
1.7 Patent Rights. "Patent Rights" shall mean (a) the issued patents and
patent applications listed in Exhibit B attached hereto and incorporated herein
by reference and any non-United States counterpart thereof, (b) any patent
application constituting an equivalent, counterpart, reissue, extension or
continuation (including, without limitation, a continuation in part or a
division) of any of the foregoing applications, and (c) any patent issued or
issuing upon any of the foregoing applications.
1.8 Products. "Products" shall mean any and all products in the SCI Field.
1.9 SCI Field. "SCI Field" shall mean the development, manufacture, use and
sale of any and all pharmaceutical intermediates, active ingredients,
agrichemicals, flavours, fragrances and other chemicals and compounds, except
that this field shall not include (i) the right to develop, make, use and sell
those compounds included in Exhibit C-1 attached hereto and incorporated herein
by reference; (ii) the right to develop, make, use and sell Combinatorial
Chemistry Libraries of chiral or achiral compounds; or (iii) the right to
develop, make, use and sell compounds in the Combinatorial Chemistry Libraries
in quantities of less than one (1) kilogram. Compounds described in part (iv) of
Exhibit C-2 attached hereto
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and made a part hereof shall be included in this field, but only on a
non-exclusive basis.
1.10 Tanabe Agreement. "Tanabe Agreement" shall mean the license and
development agreement between SI and Tanabe Seiyaku Co., Ltd. dated October 30,
1990, as it may have been supplemented and amended from time to time prior to
the Effective Date.
1.11 Technical Information. "Technical Information" shall mean all trade
secrets, know-how, computer programs (including copyrights in said software),
knowledge, technology, means, methods, processes, practices, formulas,
techniques, procedures, technical assistance, designs, drawings, apparatus,
written and oral rectifications of data, specifications, assembly procedures,
schematics and other valuable information of whatever nature, whether
confidential or not, and whether proprietary or not, which is now in (or
hereafter, during the term of this Agreement, comes into) the possession of SI
and which is relevant to the development, manufacture, use or sale of Products.
2. GRANT OF RIGHTS AND LICENSES
Subject to all of the terms and conditions set forth in this Agreement:
2.1 Use of Licensed Technology.
(a) SI hereby grants to SCI an exclusive, royalty-free perpetual right
and license to use and practice the Licensed Technology on a world-wide basis in
order to develop, manufacture, use and sell Products and for no other purpose;
provided, however, that: (i) SI shall retain the right to use the Licensed
Technology to manufacture pharmaceutical fine chemical intermediates and
pharmaceutical active ingredients for the clinical and laboratory use of SI and
its licensees; (ii) the right and license granted to SCI under this Section
2.1(a) shall not include the exclusive right and license granted by SI to third
parties prior to the Effective Date pursuant to any of the agreements listed in
Exhibit D attached hereto and incorporated herein by reference, but shall
include rights and licenses granted by such third parties back to SI pursuant to
such agreements before, on and after the Effective Date; and (iii) SI shall, as
described in Section 4.3 below, retain a co-equal ownership right and interest
in all of SI's rights and obligations under the Tanabe Agreement.
(b) SI hereby also grants to SCI a non-exclusive, royalty-free right
and license to use and practice the Licensed Technology on a world-wide basis in
order to develop, manufacture, use and sell compounds included in parts (i) and
(iv) of Exhibit C-2 hereto for the periods of time described in Exhibit C-2
hereto.
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(c) From time to time upon the request of SCI, SI shall provide to SCI,
at no additional cost to SCI, all of the Technical Information within thirty
(30) days of receiving SCI's written request, so long as there is no agreement
between SI and a third party as of the Effective Date which limits SI's ability
to provide such information to SCI. In addition, all patent or other searches
and prior art in the possession of SI with respect to the Patent Rights shall be
provided to SCI at its request.
2.2 Right to Sublicense or Assign. SCI shall have the right to sublicense
or assign any of the rights and licenses granted hereunder, so long as each
sublicense or assignee agrees to be bound by all of the terms and conditions
contained in this Agreement.
2.3 No Rights by Implication. No rights or licenses with respect to
Licensed Technology are granted or deemed granted hereunder or in connection
herewith, other than those rights or licenses expressly granted in this
Agreement.
2.4 Sharing of Improvements.
(a) Each party agrees to notify the other party of each Improvement it
has discovered, developed or acquired. The discovering, developing or acquiring
party (the "developing party") shall upon request of the other party deliver
data and specifications to the other party concerning such Improvement.
(b) If such Improvement is discovered, developed or acquired by SI,
then SCI shall have an exclusive, royalty-free perpetual right and license to
use and practice such Improvement on a world-wide basis in order to develop,
manufacture, use and sell Products and for no other purpose. Such Improvement
shall be deemed to be included in the definition of "Licensed Technology" for
all purposes.
(c) If such Improvement is discovered, developed or acquired by SCI,
then SI shall have an exclusive, royalty-free perpetual right and license
(including the right to grant sublicenses) to use and practice such Improvement
on a world-wide basis in order to develop, manufacture, use and sell all
products outside the SCI Field and for no other purpose.
(d) If such Improvement is discovered, developed or acquired jointly by
SI and SCI, then such Improvement shall be considered jointly owned by SI and
SCI. SCI agrees not to use or license such Improvement outside the SCI Field and
SI agrees not to use or license such Improvement in the SCI Field.
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3. TECHNICAL ASSISTANCE AND INSTRUCTION.
3.1 Provided by SI. Upon request, SI shall provide to SCI reasonable
technical assistance and instruction, at SCI's sole expense (such expense to be
approved in advance and in writing by SCI), in understanding, interpreting and
applying the Licensed Technology for the purpose of commercially developing
Products. SI shall make its employees reasonably available for consultation by
telephone, or in person, at the offices at SI, in connection with such
assistance and instruction, all at the sole expense of SCI (such expense to be
approved in advance and in writing by SCI), in accordance with the terms and
provisions to be agreed upon in writing by SI and SCI.
3.2 Provided by SCI. Upon request, SCI shall provide to SI reasonable
technical assistance and instruction, at SI's sole expense (such expense to be
approved in advance and in writing by SI), in understanding, interpreting and
applying the Improvements discovered, developed or acquired by SCI for the
purpose of commercially developing products outside the SCI Field. SCI shall
make its employees reasonably available for consultation by telephone, or in
person, at the offices at SCI, in connection with such assistance and
instruction, all at the sole expense of SI (such expense to be approved in
advance and in writing by SI), in accordance with the terms and provisions to be
agreed upon in writing by SI and SCI.
3.3 Visitors. Each party shall maintain adequate comprehensive general
liability insurance with waivers of subrogation, covering employees and
representatives of the other party visiting the facilities or using the
equipment or handling the products of the insured party. Employees and
representatives of either party visiting the facilities of the other party shall
be required to observe the rules and regulations of the facilities being
visited. Each party agrees to hold the other party harmless from any
responsibility for injuries to or the death of its employees or representatives
while visiting the other party's facilities or damage to the other party's
property, except in cases of gross negligence or intentional tortious acts
and/or actions insured against, provided that all claims hereunder are brought
within six (6) months after the incident(s) giving rise to such claims.
4. INVENTIONS AND THIRD PARTY LICENSES
4.1 Registering Patents and Other Intellectual Property Rights.
(a) SI shall have the exclusive right to prepare, prosecute and
maintain patent applications and other intellectual property registrations, and
to maintain and enforce patents and rights issued thereon, with respect to the
Licensed Technology and to any Improvements discovered, developed or otherwise
acquired by SI. Any costs reasonably incurred by SI in accordance with this
Section 4.1(a)
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shall be borne 70% by SCI and 30% by SI. SCI shall pay SI's invoices to SCI for
such costs within thirty (30) days of SCI's receipt thereof. If SI decides not
to exercise its exclusive right described in this Section 4.1(a), SI shall so
notify SCI in writing and SCI shall then have right to prepare, prosecute and
maintain patent applications and other intellectual property registrations, and
to maintain and enforce patents and rights issued thereon, with respect to the
Licensed Technology and to any Improvements discovered, developed or otherwise
acquired by SI, all at SCI's expense.
(b) SCI shall have the exclusive right to prepare, prosecute and
maintain patent applications and other intellectual property registrations, and
to maintain and enforce patents and rights issued thereon, with respect to any
Improvements discovered, developed or otherwise acquired by SCI. Any costs
reasonably incurred by SCI in accordance with this Section 4.1(b) shall be borne
100% by SCI. If SCI decides not to exercise its exclusive right described in
this Section 4.1(b), SCI shall so notify SI in writing and SI shall then have
right to prepare, prosecute and maintain patent applications and other
intellectual property registrations, and to maintain and enforce patents and
rights issued thereon, with respect to any Improvements discovered, developed or
otherwise acquired by SCI, all at SI's expense.
(c) With respect to any Improvements discovered, developed or otherwise
acquired jointly by SI and SCI, SI shall have the exclusive right to prepare,
prosecute and maintain patent applications and other intellectual property
registrations, and to maintain and enforce patents and rights issued thereon.
Any costs incurred by SI in accordance with this Section 4.1 (c) shall be borne
50% by SI and 50% by SCI. SCI shall pay SI's invoices to SI for such costs
within thirty (30) days of SCI's receipt thereof.
4.2 Third Party Licenses.
(a) To the extent that any part of the Licensed Technology consists of
rights of SI under an agreement or license with or from a third party, SCI's
right to use such part of the Licensed Technology hereunder shall be limited to
the rights which SI has a right to grant or extend under such agreement or
license and otherwise subject to any obligations assumed by SI in consideration
of the grant or assignment of such right or license to SI which is to be
extended to SCI, including the payment to SI (or such other party as SI may
direct) of royalties which SI may owe to such third party based on SCI's
development, manufacture, use or sale of the Products. All fixed maintenance
costs of SI under such agreements shall be borne 70% by SCI and 30% by SI. SCI
shall pay SI's invoices to SCI for such costs within thirty (30) days of SCI's
receipt thereof.
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(b) All such agreements with third parties which were executed by SI on
or before the Effective Date are listed on Exhibit A hereto and have been
provided in full to SCI prior to the Effective Date.
(c) To the extent that any Improvements discovered, developed or
acquired by SCI consist of rights of SCI under an agreement or license with or
from a third party, any assignment or license granted to SI hereunder shall be
limited to the rights which SCI has a right to grant under such agreement or
license and otherwise subject to any obligations assumed by SCI in consideration
of the grant or assignment of such right or license to SCI which is to be
sublicensed to SI, including the payment of royalties or other fees to such
third party.
4.3 Assignment of Interest in Rights Licensed Under Tanabe Agreement.
(a) SI hereby assigns to SCI a co-equal ownership right and interest in
all of SI's rights and obligations under the Tanabe Agreement.
(b) The parties have agreed that: (i) the revenue from the Tanabe
Agreement, as well as the reasonable costs incurred by SI in connection with the
Tanabe Agreement (to the extent that such costs are reasonable and documented),
shall be prior to January 1, 1996 directed to SI and thereafter shall be divided
50% to SCI and 50% to SI; (ii) after January 1, 1996, each party shall pay the
other party's invoices for its share of such expenses within thirty (30) days of
its receipt thereof; and (iii) after January 1, 1996, each party shall remit to
the other party 50% of the revenues which it receives from the Tanabe Agreement
within thirty (30) days of its receipt thereof.
5. CONFIDENTIAL INFORMATION, NON-COMPETITION AND NON-SOLICITATION
5.1 Confidentiality Maintained. Each party agrees that the other party
hereto has a proprietary interest in its Confidential Information. During and
after the term of this Agreement, all disclosures of Confidential Information to
the receiving party, its agents and employees shall be held in strict confidence
by such receiving party, which shall disclose the Confidential Information only
to those of its agents and employees to whom it is necessary in order to
properly carry out their duties as limited by the terms and conditions hereof.
During and after the term of this Agreement, the receiving party shall not use
the Confidential Information except for the purposes of exercising its rights
and carrying out its duties hereunder. The provision of this Section 5.1 shall
also apply to any sublicensees, consultants or subcontractors during and after
the term of this Agreement, that the receiving party may sublicense or engage in
connection with this Agreement.
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5.2 Permitted Disclosures. Notwithstanding the provisions of Section 5.1
above, SI and SCI may, to the extent necessary, disclose and use Confidential
Information, consistent with the rights of SI and SCI otherwise granted
hereunder, for the purpose of: (a) engaging in research and development,
conducting clinical testing and marketing programs, or securing institutional or
government approval to clinically test or market any product; (b) subject to
confidentiality agreements typically executed in the industry under comparable
circumstances, sharing clinical trial results and data with third parties
conducting clinical trials on products; or (c) securing patent or other
intellectual property protection for an invention.
5.3 Liability for Disclosure. Notwithstanding anything contained in this
Agreement to the contrary, neither party shall be liable for a disclosure of the
other party's Confidential Information if the information so disclosed:
(a) was in the public domain without violation of the rights of the
non-disclosing party at the time it was disclosed by the disclosing party to the
receiving party; or
(b) was known to or contained in the records of the receiving party
from a source with rights thereto not in violation of the rights of the
non-disclosing party at the time of disclosure by the disclosing party to the
receiving party and can be so demonstrated; or
(c) becomes known to the receiving party from a source other than the
disclosing party without breach of this Agreement by the receiving party and can
be so demonstrated; or
(d) was required to be disclosed under legal or administrative process,
provided that the disclosing party has given the non-disclosing party no less
than ten (10) days prior written notice of the disclosing party's intention to
make a disclosure pursuant to this Section 5.3.
6. LITIGATION
6.1 Notification of Suit. Each party shall give the other party prompt
written notice of any suit, action or written claim involving the Licensed
Technology, and in any event no more than thirty (30) days after acquiring such
knowledge or prior to the expiration of time in which a response must be filed
with a court or other judicial body, whichever is first to occur.
6.2 Prosecution of Infringements.
(a) If SCI discovers an infringement of the Licensed Technology by a
third party, it shall give SI prompt notice thereof and shall take no other
action
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against the alleged infringer without the prior written consent of SI. SCI
agrees to cooperate with SI, at no out-of-pocket expense to SCI, in connection
with any action taken by SI to prosecute such infringements. Any recovery of
damages or attorneys fees in infringements actions, or amounts received at
settlement thereof, shall be applied first to reimburse the parties for their
expenses incurred in connection with such actions, and thereafter shall be
divided as follows: (i) if the infringement is described in Section 9.3 of the
Tanabe Agreement, 50% to SCI and 50% to SI; and (ii) for all other
infringements, (A) if such infringement occurred outside the SCI Field, 100% to
SI; and (B) if such infringement occurred inside the SCI Field, 70% to SCI and
30% to SI.
(b) SI shall have no obligation to institute suit or take action
against any infringer. In the event that SI declines to take such action for any
reason, SCI shall have the right, but not the obligation, to take such action if
the infringement is in the SCI Field, but shall promptly advise SI of any
counterclaims brought by the alleged infringer and give SI an opportunity to
defend against such counterclaims. In the event of any such counterclaims, SCI
shall not enter into settlement with the alleged infringer without the prior
written consent of SI, which shall not be unreasonably withheld.
7. REPRESENTATIONS, WARRANTIES AND COVENANTS
Each of SI and SCI hereby represents, warrants and covenants to the other,
as of the date that it executed this Agreement, as follows:
7.1 Right, Power and Authority. It has full right, power and authority to
enter into this Agreement and there is nothing which would prevent it from
performing its obligations under the terms and conditions imposed on it by this
Agreement.
7.2 Binding Obligation. This Agreement has been duly authorized by all
necessary corporate action of SI and SCI, respectively, and constitutes a valid
and binding obligation on SI and SCI, respectively, enforceable in accordance
with the terms hereof, except as to applicable bankruptcy, reorganization
insolvency, moratorium and similar laws affecting the rights of creditors
generally and the discretion of courts in awarding equitable relief.
7.3 No Government Approvals Needed. No registration with or approval of any
government agency or commission of any jurisdiction is necessary for the
execution, delivery or performance by it of any of the terms of this Agreement,
or for the validity and enforceability hereof or with respect to its obligations
hereunder.
7.4 No Provisions Contravened. There is no provision in its certificates of
incorporation or By-Laws, and no provision in any existing mortgage, indenture,
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contract or agreement binding on it, which would be contravened by the
execution, delivery or performance by it of this Agreement.
7.5 No Consent of Third Parties Needed. No consent of any trustee or holder
of any of its indebtedness or any other third party is or shall be required as a
condition to the validity of this Agreement.
7.6 No Proceedings Pending. There is no action or proceeding pending or in
so far as it knows threatened in writing against it before any court,
administrative agency or other tribunal which might have a material adverse
effect on its ability to perform its obligations hereunder. Neither party knows
of any claim by any third party of infringement by the Licensed Technology on
such third party's patent, copyright or other intellectual property rights
(other than allegations made by Andeno concerning interference with its GLOP
patents in connection with the Tanabe products) or of misappropriation of trade
secrets involving the Technical Information.
7.7 Not Contravene Any Law. Neither its execution nor its delivery of this
Agreement nor its fulfillment of or compliance with the terms and provisions
hereof shall contravene any provision of the laws of any jurisdiction,
including, without limitation, any statute, rule, regulation, judgment, decree,
order, franchise or permit applicable to it.
7.8 Licensed Technology. SI represents and warrants to SCI that it owns, or
has the full right to use (and extend to SCI the right to use) under written
agreements, all patents, copyrights, trademarks, trade secrets and other
intellectual property rights included in the Licensed Technology.
7.9 Improvements. Each party has the right to perform its obligations with
respect to Improvements hereunder.
8. TERMINATION OR EXPIRATION
8.1 Term of Agreement. The term of this Agreement shall commence on the
Effective Date and shall continue until the earlier to occur of (i) December 31,
1998; or (ii) on six months written notice from SI to SCI or from SCI to SI on
or after the date after March 1, 1996(i) on which the ownership by SI of SCI
shall first be less than twenty percent (20%) of the outstanding voting stock of
SCI, or (ii) if SCI has been merged or consolidated into another entity, then on
which the ownership by SI of such other entity shall first be less than twenty
percent (20%) of the outstanding voting stock of such entity; provided, that any
perpetual licenses or sublicenses granted under this Agreement shall survive
such expiration or termination to the extent that they relate to the Licensed
Technology and any Improvements existing on such date of termination or
expiration. Sections 2.4(a) and (d) and Article 3 of this Agreement shall end
upon the expiration or termination of this Agreement; provided,
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however, that if this Agreement expires or is terminated prior to January 1,
1998, Article 3 shall remain in effect until January 1, 1998 so long as the
party receiving benefits thereunder is not in default of its obligations
hereunder on such date of expiration or termination.
8.2 No Damages for Termination. The parties hereto agree that, if SI
terminates this Agreement pursuant to Section 8.1, then SI shall not be liable
for damages or injuries suffered by SCI as a result of that termination.
9. MISCELLANEOUS
9.1 Successors and Assigns. The terms and provisions of this Agreement
shall inure to the benefit of, and be binding upon, SI, SCI and their respective
successors and assigns. Any reference to SI and SCI hereunder shall be deemed to
include the successors thereto and assigns thereof.
9.2 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the Commonwealth of Massachusetts applicable to
agreements made and to be fully performed therein, without regard to principles
of conflicts of law.
9.3 Amendments and Waivers. No amendment, modification, waiver, termination
or discharge of any provision of this Agreement, nor consent to any departure by
SI or SCI therefrom, shall be effective unless the same shall be in writing
specifically identifying this Agreement and the provision intended to be
amended, modified, waived, terminated or discharged and signed by SI and SCI,
and each such amendment, modification, waiver, termination or discharge shall be
effective only in the specific instance and for the specific purpose for which
given. No provision of this Agreement shall be varied, contradicted or explained
by any oral agreements, course of dealing or performance or any other matter not
set forth in an agreement in writing and signed by SI and SCI.
9.4 No Other Relationship. Nothing herein contained shall be deemed to
create a joint venture, agency, partnership or employer-employee relationship
between the parties hereto. Neither party shall have any power to enter into any
contracts or commitments in the name of, or on behalf of, the other party, or to
bind the other party in any respect whatsoever.
9.5 Notices. All notices, requests and other communications to SI or SCI
hereunder shall be in writing (including telecopy or similar electronic
transmissions) and shall be personally delivered or sent by telecopy or other
electronic facsimile transmission during normal business hours or by registered
mail or certified mail, return receipt requested, postage prepaid, in each case
to the respective address
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specified below (or to such other address as may be specified in writing to the
other party hereto):
Sepracor Inc.
33 Locke Drive
Marlborough, MA 01752
Attention: President
----------
SepraChem Inc.
33 Locke Drive
Marlborough, MA 01752
Attention: President
----------
Any notice or communication given in conformity with this Section 9.5 shall be
deemed to be effective when received by the addressee, if delivered by hand,
telecopy or other electronic facsimile transmission, and three (3) days after
mailing, if mailed.
9.6 Entire Understanding. This Agreement, together with certain other
agreements entered into between the parties in conjunction herewith on even date
herewith, including the Contract Manufacturing Agreement, Supply Agreement,
Contract Research Agreement, Registration Rights Agreement and Agreement and
Plan of Merger, constitutes, on and as of the date hereof, the entire agreement
of SI and SCI with respect to the subject matter hereof, and all prior or
contemporaneous understandings or agreements, whether written or oral, between
SI and SCI with respect to such subject matter are hereby superseded in their
entirety.
9.7 Severability. If any provision hereof should be held invalid, illegal
or unenforceable in any respect in any jurisdiction, then, to the fullest extent
permitted by law, (a) all other provisions hereof shall remain in full force and
effect in such jurisdiction and shall be liberally construed in order to carry
out the intentions of the parties hereto as nearly as may be possible and (b)
such invalidity, illegality or unenforceability shall not affect the validity,
legality or enforceability of such provision in any other jurisdiction. To the
extent permitted by applicable law, SI and SCI hereby waive any provision of law
that would render any provision hereof prohibited or unenforceable in any
respect.
9.8 Further Assurances.
(a) Each of SI and SCI agrees to duly execute and deliver, or cause
to be duly executed and delivered, such further instruments and do and cause to
be done such further acts and things, including, without limitation, the filing
of such
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additional assignments, agreements, documents and instruments, that may be
necessary or as the other party hereto may at any time and from time to time
reasonably request in connection with this Agreement or to carry out more
effectively the provisions and purposes of, or to better assure and confirm unto
such other party its rights and remedies under, this Agreement.
(b) Each party agrees to cause each of its employees and agents to take
all actions and to execute, acknowledge and deliver all instruments or
agreements reasonably requested by the other party, and necessary for the
perfection, maintenance, enforcement or defense of that party's rights as set
forth herein.
9.9 No Implied Waivers; Rights Cumulative. No failure on the part of SI or
SCI to exercise and no delay in exercising any right, power, remedy or privilege
under this Agreement, or provided by statute or at law or in equity or
otherwise, shall impair, prejudice or constitute a waiver of any such right,
power, remedy or privilege or be construed as a waiver of any breach of this
Agreement or as an acquiescence therein, nor shall any single or partial
exercise of any such right, power, remedy or privilege preclude any other or
further exercise thereof or the exercise of any other right, power, remedy or
privilege.
9.10 Force Majeure. SI and SCI shall each be excused for any failure or
delay in performing any of its respective obligations under this Agreement,
other than its obligations to make payments to the other party, if such failure
or delay is caused by Force Majeure.
9.11 Survival of Contents. Notwithstanding anything else in this Agreement
to the contrary, the parties agree that Sections 2.1, 2.2, 2.3 and 2.4(b) and
(c) and Articles 4, 5, 6, 7, 8 and 9 shall survive the termination or expiration
of this Agreement, as the case may be, to the extent required thereby for the
full observation and performance by any or all of the parties hereto.
9.12 Compliance With Laws. Each of SI and SCI covenants and agrees that all
of its activities under or pursuant to this Agreement shall comply in all
material respects with all applicable laws, rules and regulations.
9.13 Headings. Headings used herein are for convenience only and shall not
in any way affect the construction of, or be taken into consideration
interpreting, this Agreement.
9.14 Execution in Counterparts. This Agreement may be executed in
counterparts, each of which counterparts, when so executed and delivered, shall
be deemed to be an original, and all of which counterparts, taken together,
shall constitute one and the same instrument.
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9.15 Arbitration.
(a) All disputes arising out of or relating to this Agreement shall be
finally settled by arbitration conducted in Boston under the rules of Commercial
Arbitration of the American Arbitration Association ("Rules"). The arbitrator
shall provide for the discovery of evidence by the Massachusetts rules of civil
procedure governing discovery, notwithstanding any other provisions in such
Rules. Both parties shall bear equally the cost of the arbitration (exclusive of
legal fees and expenses, all of which each party shall bear separately). All
decisions of the arbitrator(s) shall be final and binding on both parties and
enforceable in any court of competent jurisdiction.
(b) Notwithstanding the foregoing, in the event of breach by a party of
its obligations hereunder, the non-breaching party may seek injunctive or other
equitable relief in any court of competent jurisdiction. Each party hereby
acknowledges the unique nature of Licensed Technology. SI acknowledges that the
value of SCI's right and license to use the Licensed Technology in the SCI Field
pursuant to this Agreement rests, in large part, on the fact that SCI's rights
are exclusive in the SCI Field. Likewise, SCI acknowledges that the value of
SI's right and license to use the Licensed Technology outside the SCI Field
pursuant to this Agreement rests, in large part, on the fact that SCI has no
rights outside the SCI Field. Each party further acknowledges that monetary
damages, by themselves, would not adequately compensate the other party in the
event of breaches or violations of various terms of this Agreement (including
without limitation the restriction of SCI's rights to the SCI Field and the
restriction of SI's rights to outside the SCI Field). Therefore, in addition to
recovering monetary damages, each party shall have the right to immediately
obtain a temporary restraining order and/or injunctive relief from any court in
equity to halt or prevent breaches or violations by the other party of its
obligations under this Agreement; provided, however, that each party
acknowledges that the other party, although it may be breaching or violating its
obligations under this Agreement, should not be enjoined from exercising or
enjoying its rights, or its reservation of rights, under this Agreement, as the
case may be.
IN WITNESS WHEREOF, the parties hereto have signed this Agreement under
seal.
SEPRACOR, INC., as Licensor
By /s/ Timothy J. Barberich
Timothy J. Barberich, President
14
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SEPRACHEM INC., as Licensee
By /s/ Robert L. Bratzler
Robert L. Bratzler, President
15
<PAGE>
EXHIBIT A
THIRD PARTY AGREEMENTS INCLUDED IN LICENSED TECHNOLOGY
------------------------------------------------------
(1) License Agreement dated May 5, 1989 by and between Massachusetts
Institute of Technology ("MIT") and SI
(2) License Agreement dated June 21, 1991 by and between MIT and SI
(3) Agreement between Research Corporation Technologies Inc. ("RCT") and SI
dated September 10, 1992
(4) Agreement between RCT and SI dated March 6, 1991
16
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EXHIBIT B
ISSUED PATENTS AND PATENT APPLICATIONS
--------------------------------------
17
<PAGE>
EXHIBIT C
---------
COMPOUNDS EXCLUDED FROM SCI FIELD
---------------------------------
This Exhibit consists of Exhibit C-1 and Exhibit C-2.
Exhibit C-1
- ------------
Terfenadine carboxylate (racemate and single isomers)
R-Ketoprofen
S-Ketoprofen (for use in dentifrice or mouthwash formulations)
R-Albuterol
R,R,-Formoterol
R-Fluoxetine
S-Fluoxetine
S-Oxybutynin
R-Onybutynin
S-Doxazosin
Norastemizole
Norcisapride (racemate and single isomers)
R-Ondansetron
S-Ondansetron
(-)-Amlodipine
Pantoprazole single isomers
Ketoconazole single isomers
Itraconazole single isomers
Descarboethoxyloratadine
Lomefloxacin single isomers
Ketorolac single isomers
Etodolac single isomers
Metoprolol single isomers
Exhibit C-2
- -----------
Other active metabolite or single-isomer pharmaceutical compounds and other
chiral compounds which are identified as being from a Combinatorial Chemistry
Library, where such compounds are being developed by SI or its licensees;
provided, however, that, with respect to each such compound under this Exhibit
C-2,
(i) SCI shall have a nonexclusive, royalty-free right and
license to use and practice the Licensed Technology on a
world-wide basis in order to
18
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develop, manufacture, use and sell such compound pursuant
to all of the terms and conditions of this Agreement and
such compound shall be included in the SCI Field (but only
on a non-exclusive basis) until such time as SCI might lose
such non-exclusive rights in accordance with (iii) below.
(ii) SI shall have the right to notify SCI in writing at any
time after SI or one of its licensees or sublicensees
begins clinical trials on such compound that SI desires to
add such compound to Exhibit C-1;
(iii) If SCI had prior to receipt of such notice under (ii) above
not produced at least one (1) kilogram of such compound for
sale to a third party, then such compound shall be added to
Exhibit C-1 and shall be excluded from the SCI Field;
(iv) If SCI had prior to receipt of such notice under (ii) above
produced at least one (1) kilogram of such compound for
sale to a third party, then:
(A) SCI shall have a non-exclusive, royalty-free
perpetual right and license to use and practice
the Licensed Technology on a world-wide basis in
order to develop, manufacture, use and sell such
compound pursuant to all of the terms and
conditions of this Agreement and such compound
shall be included in the SCI Field (but only on a
non-exclusive basis); and
(B) SI shall also have the right to use and practice
the Licensed Technology (with the right to
sublicense) on a world-wide basis in order to
develop, manufacture, use and sell such compound.
19
<PAGE>
EXHIBIT D
---------
LICENSES AGREEMENTS GRANTED BY SI TO THIRD PARTIES
--------------------------------------------------
1. License Agreement between SI and Alza dated April 13, 1994.
2. License Agreement between SI and Sterling Winthrop Inc. dated
November 30, 1992.
3. License Agreement between SI and Marion Merrell Dow Agreement dated
June 1, 1993.
20
<PAGE>
AMENDMENT NO. 1
TO
TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
The undersigned refer to a certain Technology Transfer and License
Agreement effective as of January 1, 1995 by and between Sepracor Inc. and
SepraChem Inc. (the "Agreement").
Capitalized terms not defined herein shall have the meanings ascribed to
them in the Agreement.
1. Semi-Synthetic Paclitaxel. The parties hereto agree to amend Section 1.5
of the Agreement to include all patents and technology relating to
semi-synthetic Paclitaxel, which was initially discovered on July 11, 1995.
2. Clarification of Rights Retained by Licensor. For the sake of
clarification, the parties hereto confirm that, notwithstanding anything
contained in the Agreement to the contrary, Licensor has retained the right to
grant to a third party a perpetual and exclusive right and license, including
the right to grant sublicenses, to the Licensed Technology and to Improvements
for use by such third party in a field limited to the development, production
and sale or other transfer of Combinatorial Chemistry Libraries (and related
technologies) of chiral and achiral compounds for testing against chemical or
biological targets.
3. Assignment of Nagase Agreements. To the extent that Nagase agrees to the
assignment by SI to SCI of SI's rights and obligations under any or all of the
agreements listed on Attachment 1 hereto, or any part thereof, then SI shall
assign such rights and obligations to SCI forthwith.
4. No Other Changes. Except as is expressly stated in this Amendment No. 1,
the terms of the Agreement remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have signed this Amendment No. 1
under seal as of July 12, 1995.
SEPRACOR INC., as Licensor
By /s/ Timothy J. Barberich
------------------------------
Timothy J. Barberich, President
SEPRACHEM INC., as Licensee
By: /s/ Robert L. Bratzler
-----------------------------
Robert L. Bratzler, President
<PAGE>
ATTACHMENT 1
(Existing Agreements)
<TABLE>
<S> <C>
1) CONFIDENTIALITY AGREEMENT dated as of August 24, 1989
2) DEVELOPMENT AGREEMENT dated as of July 24, 1990
3) MEMORANDUM to the DEVELOPMENT AGREEMENT dated as of July 17, 1992
4) SECOND MEMORANDUM TO THE DEVELOPMENT AGREEMENT dated as of May 10, 1993
5) LICENSE AGREEMENT (S-IBUPROFEN) dated as of July 24, 1990
6) SECOND AMENDMENT TO THE S-IBUPROFEN LICENSE AGREEMENT dated as of
May 10, 1993
7) THIRD AMENDMENT TO THE S-IBUPROFEN LICENSE AGREEMENT dated as of
_____________
8) DISTRIBUTORSHIP AND AGENCY AGREEMENT as of July 24, 1990
9) LICENSE AGREEMENT (S-ATENOLOL) dated as of January 24, 1992
10) AMENDMENT TO S-ATENOLOL LICENSE AGREEMENT dated as of May 10, 1993
11) LICENSE AGREEMENT (S-FLURBIPROFEN) dated as of July 24, 1992
12) AMENDMENT TO S-FLURBIPROFEN LICENSE AGREEMENT dated as of May 10, 1993
13) LICENSE AGREEMENT (GLYCIDOL AND ITS DERIVATIVES) dated as of July 24, 1992
14) AMENDMENT TO GLYCIDOL AND ITS DERIVATIVES LICENSE AGREEMENT dated as of
May 10, 1993
15) LICENSE AGREEMENT (CAPTOPRIL) dated as of July 24, 1992
16) LICENSE AGREEMENT (S-KETOPROFEN) dated as of July 24, 1992
1
<PAGE>
<S> <C>
17) AMENDMENT TO THE S-KETOPROFEN LICENSE AGREEMENT dated as of July 24, 1993
18) LICENSE AGREEMENT (6-APA) dated as of July 24, 1992
19) AMENDMENT TO 6-APA LICENSE AGREEMENT dated as of May 10, 1993
20) LICENSE AGREEMENT (EPOXYCHROMANS AND ITS DERIVATIVES) dated as of
___________, 1995
21) SUMMARY OF SEPRACOR/NAGASE MEETING, Marlborough, MA, USA dated as of
July 28, 1994
22) PROFIT SHARING OF S-IBUPROFEN, S-KETOPROFEN, AND R-KETOPROFEN dated
as of September 9, 1994
23) CONFIDENTIALITY AGREEMENT (KHANDELWAL/6-APA) dated as of February 1, 1991
24) CONFIDENTIALITY AGREEMENT (ALEMBIC/6-APA) dated as of July 1, 1991
25) CONFIDENTIALITY AGREEMENT (DWC/CAPTOPRIL) dated as of July 25, 1991
26) CONFIDENTIALITY AGREEMENT (WOCKHARDT/CAPTOPRIL) dated as of
October 31, 1991
27) CONFIDENTIALITY AGREEMENT (SYNPAC/6-APA dated as of March 6, 1992
28) CONFIDENTIALITY AGREEMENT (BOOTS/S-IBUPROFEN) dated as of March 6, 1992
29) CONFIDENTIALITY AGREEMENT (ETHYL/S-IBUPROFEN) dated as of August 16, 1993
30) CONFIDENTIALITY AGREEMENT (CHEMINOR/S-IBUPROFEN) dated as of October 1, 1993
31) CONFIDENTIALITY AGREEMENT (SHASUN/S-IBUPROFEN) dated as of April 6, 1994
</TABLE>
2
<PAGE>
AMENDMENT No. 2
TO
TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
This Amendment No. 2, dated as of the 7th day of February, 1996 ("Amendment
No. 2"), is to the Technology Transfer and License Agreement effective as of
January 1, 1995, as amended by Amendment No. 1 to Technology License and
Transfer Agreement ("Amendment No. 1"), dated as of July 12, 1995 (as so amended
by Amendment No. 1, the "Technology Transfer Agreement"), by and between
SEPRACOR, INC., a Delaware corporation which has offices at 33 Locke Drive,
Marlborough, Massachusetts ("SI"), and SEPRACHEM, INC., a Delaware corporation
which has offices at 33 Locke Drive, Marlborough, Massachusetts ("SCI").
WHEREAS, under the Technology Transfer Agreement, SI granted SCI a license
to use certain intellectual and industrial property rights, as more fully
described therein; and
WHEREAS, both parties desire to amend certain provisions of the Technology
Transfer Agreement;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties do hereby agree as
follows:
1. The first sentence of Section 8.1 of the Technology Transfer Agreement
is hereby deleted in its entirety and the following substituted therefor:
"The term of this Agreement shall commence on the Effective Date and shall
continue until the earlier to occur of (i) December 31, 1998; or (ii) on six
months written notice from SI to SCI or from SCI to SI on or after the date
after March 1, 1996 (a) on which the ownership by SI of SCI shall first be less
than twenty percent (20%) of the outstanding voting stock of SCI, provided that
such event does not occur in connection with a merger or consolidation of SCI
into another entity, or (b) if SCI has been merged or consolidated into another
entity and SI has exchanged its stock of SCI for stock of the parent corporation
of such other entity, then the date on which the ownership by SI of such parent
corporation shall first be less than twenty percent (20%) of the outstanding
voting stock of such parent corporation; provided, that any perpetual licenses
or sublicenses granted under this Agreement, and any licenses or sublicenses
granted under Section 2.1(b) hereof, shall survive such expiration or
termination to the extent that they relate to the Licensed Technology and any
Improvements existing on such date of termination or expiration; provided,
further, however, that any licenses or sublicenses granted under Section 2.1(b)
hereof shall continue to be terminable in accordance with the provisions of
Exhibit C-2 hereof."
<PAGE>
2. Exhibit D to the Technology Transfer Agreement is hereby amended to add
all of the agreements listed on Appendix 1 to Amendment No. 1; it being
understood and agreed that the provisions of Section 3 of Amendment No. 1 remain
in full force and effect.
3. Capitalized terms used herein and not otherwise defined shall have the
meanings set forth for such terms in the Technology Transfer Agreement.
4. As so amended by this Amendment No. 2 and Amendment No. 1, the terms and
provisions of the Technology Transfer Agreement are ratified and confirmed and
shall remain in full force and effect as though set forth in full herein.
IN WITNESS WHEREOF, the parties hereto, by their duly authorized officers,
have signed this Amendment under seal.
SEPRACOR, Inc. as Licensor
By: /s/ David P. Southwell
----------------------------
David P. Southwell, ECP & CFO
SEPRACHEM, INC., as Licensee
By: /s/ Robert L. Bratzler
-----------------------------
Robert L. Bratzler, President
2